When a brand in the process of being registered already has its domain name cybersquatted in .COM
Several major accounts have already experienced this mishap. No sooner has your new trademark application been submitted than the domain name equivalent is already cybersquatted as .COM.
This speculative cybersquatting mechanism is well tried and tested by savvy cybersquatters.
They monitor the publication of new trademark applications. They then check the availability of domain names, particularly in .COM. If the name corresponding to the trademark is available, they immediately buy it in .COM. Once registered, the domain name is immediately listed for sale on domain name sales platforms.
The asking price remains affordable, often just under $1,000. Admittedly, this is higher than a simple ten-dollar deposit. Nevertheless, launching a new brand without its .COM domain name doesn’t look very serious. As a result, the company that has applied to register its trademark will often pay the holder of this speculative cybersquatting.
An infuriating situation that companies could easily avoid by registering their .COM domain names in advance. But in reality, this common sense is hardly ever applied, probably even more so in large groups.
This unfortunate adventure recently occurred at the pharmaceutical company Teva.
Buy a .COM domain name for your new brand for $995?
Teva Pharmaceutical USA is a pharmaceutical company founded in 1935 in the United States. It is one of the world’s largest producers of generic drugs, with 42,000 employees in over 60 countries.
It has applied to the United States Patent Trademark Office (USPTO) for registration of the following trademarks: ABEQUO, GENMYGO, IQUALBI and JAYZIQ, between January 26, 2022 and February 01, 2022.
Following the publication of these U.S. trademark applications, the domain names <abequo.com>, <genmygo.com>, <iqualbi.com> and <jayziq.com> were filed between January 29, 2022 and February 04, 2022.
Speculative cybersquatting new TEVA trademarks and domain names
The domain names were registered by an individual with an address in the Cayman Islands.
Each domain name is listed for sale for USD 995 on a dedicated page. The platform for selling cybersquatted domain names is DAN, recently acquired by GoDaddy.
Faced with this situation, Teva Pharmaceutical decided to initiate an extrajudicial “UDRP” procedure number D2022-3450. The complaint was filed in September 2022, after the trademarks had been registered in the European Union in July 2022.
Teva Pharmaceutical maintains that the disputed domain names are identical to its trademarks ABEQUO, GENMYGO, IQUALBI and JAYZIQ, over which it has rights.
It monitors the registration of new trademarks to register free domain names in .COM
The pharmaceutical company also asserts that the registrant has no rights or legitimate interests in these domain names. It confirms that it has not authorized or licensed any rights whatsoever to the registrant.
Finally, Teva Pharmaceutical contends that the disputed domain names have been registered and are being misused by offering them for sale for $995.
speculative registration .COM domain name new trademark TEVA
ABEQUO, GENMYGO, IQUALBI and JAYZIQ are invented terms, i.e. highly distinctive brands.
The cybersquatter registered the four disputed domain names that identically coincide with his trademarks just days after filing trademark applications in the United States.
Therefore, there is a strong inference that the speculator registered the domain names after becoming aware of the trademark applications in the United States.
He felt that they would have commercial value for Teva Pharmaceutical. Thus, the pharmaceutical company will be interested in obtaining these domain names… by buying them back.
Faced with these bad-faith registrations, the company initiated UDRP proceedings to recover the four disputed domain names.
To avoid this type of unpleasant event, we recommend that you register your domain names in advance, before publishing a trademark application online.
Companies can use nominees to file anonymously and keep their trademark project confidential.
Finally, trademark monitoring of .COM domain names, or monitoring of all Internet extensions, can alert you to fraudulent registrations.